After undergoing three readings by the Legislative Yuan, the new Amendment to Taiwan’s Patent Law was passed on November 29, 2011, and is expected to take effect on January 1, 2013. While the Amendment makes a number of modifications to the Law, the key changes are highlighted below:
I. Patentability Requirements
The 6-month grace period for novelty will be applicable under the following circumstances:
i. the invention was used for experimental purposes;
ii. the invention was published in any printed publication other than a patent publication;
iii. the invention was displayed at an exhibition sponsored or approved by the government; or
iv. the disclosure was against the applicant’s intent.
II. Application - Filing Requirements
1. An Assignment is no longer a prerequisite document for filing a patent application; the only document required is a duly signed Power of Attorney from the Applicant.
2. Acceptable foreign language specifications/claims/drawings are now limited to those drafted in Arabic, English, French, German, Japanese, Korean, Portuguese, Russian, and Spanish only.
3. The time limit to submit the priority document will be 16 months from the earliest priority date.
4. The time limit to submit the certificates of deposit and viability issued by the local depository, if necessary, will be four months from the filing date of the application.
5. If the Applicant unintentionally fails to claim priority at the time of filing or the priority claimed has been forfeited due to the Applicant’s failure to submit indispensable information required for claiming priority, a petition to claim priority or revive the priority claim can be filed within 16 months (for invention and utility model applications) or 10 months (for design applications) from the earliest priority date.
III. More Lucid Regulations are Provided by the New Patent Law Regarding Simultaneous Filing of Invention and Utility Model Patent Applications
Where an Applicant files an invention patent application and a utility model patent application for the same invention simultaneously, if the utility model application matures into a utility model patent prior to issuance of a Notice of Allowance to the invention application, the Patent Office shall notify the Applicant to select either of the applications within a time limit; otherwise, the invention patent application shall be dismissed. In the event that the Applicant selects the invention patent application, the utility model patent shall be deemed nullified ab initio. In addition, the invention patent application shall not be granted if, during the prosecution thereof, the utility model patent has extinguished or been cancelled.
IV. Divisionals
The current stipulation that no divisional applications can be filed after issuance of the Notice of Allowance will be abolished. Under the new Law, when an application is allowed during the preliminary examination stage, the Applicant may file a divisional application within 30 days from the date of issuance of the Notice of Allowance. On the other hand, if an application is allowed during the reexamination stage, the Applicant is not permitted to file any divisional application after issuance of the Notice of Allowance.
V. Patent Right Revival
1. If the Applicant unintentionally fails to pay the issue fee and the first annuity within the deadline prescribed by law, such fees can still be paid within 6 months from the deadline, except that the first annuity shall be paid double the prescribed amount.
2. If the Applicant unintentionally fails to pay the second or any subsequent annuity within the deadline prescribed by law, such annuity can still paid within six months after the deadline. However, apart from the unpaid annuity, a surcharge calculated based upon 20% of the prescribed amount shall be additionally levied for each month of the delay beyond the due date up to 100% of the prescribed amount.
3. If a patent has extinguished as a result of non-payment of the second annuity or any annuity due thereafter prior to the expiry of the six-month grace period, a petition to reinstate the patent can be filed within one year from the day the patent extinguished with a payment of three times the annuity. Note, however, that if a patent is reinstated with a payment of three times the annuity, the right conferred by said patent shall not be enforceable against a third party who has practiced in good faith the invention or made necessary preparations for practicing the invention after the patent has extinguished and before it is reinstated and published.
VI. Design Patents
1. Partial designs, computer-generated icons, graphic user interfaces, and sets of articles are able to receive design patent protection.
2. The associated design system is now abolished and replaced by the derivative design system. The filing date of a derivative design application shall not be earlier than that of the original design application, and no derivative design application can be filed after the publication of the original design application. Unlike an associated design which is without a separate Letters Patent and the patent right of which expires or extinguishes with its parent design patent, a derivative design has its own Letters Patent and independent patent right, meaning the necessity to pay annuities therefor.
VII. Extension of Patent Term
1. Only one patent extension term will be permitted and ought to be based on the first regulatory approval certificate which again can be used to seek patent extension limiting to only once.
2. Where a patent term extension has been granted, the scope of the extended patent shall be limited to the active ingredients and the specific usages as stated on the regulatory approval certificate.
VIII. Invalidations
1. Where a Patent encompasses 2 or more claims, a partial invalidation action can be filed thereagainst.
2. The Patentee is allowed to amend the claims to further limit the scope of the claims or to delete some of the claims. In addition, the Patent Office may consolidate pending Invalidation Actions filed against a Patent.
IX. Limitations on Patent Right
1. The right conferred by an invention patent shall not apply in the following circumstances:
i. where the practice of the invention is for non-commercial purposes and non-public use;
ii. where the practice of the invention is necessary for research or experimental purpose; and
iii. where, after an invention patent has extinguished due to the Patentee's failure to pay the second or any subsequent annuity prior to the expiry of the grace period, and before the patent is reinstated and published due to the decease of the Patentee without heir, the invention has been practiced in good faith or the necessary preparations have been made for practicing purposes.
2. No infringement will result from research, trials, and other necessary acts (like pre-clinical trials and clinical trials), if they are conducted for the purpose of obtaining local pharmaceutical registration or foreign marketing approval.
X. Damages
Reasonable royalty will become an additional option for patentees when calculating damages, alongside lost profits and infringer’s profit. Under the infringer’s profit approach, defendants will no longer bear the burden of proving its overhead costs as the current law requires. Meanwhile, the new Law removes punitive damages for intentional infringement, but stresses that damages claim will not stand where the defendant lacks negligence.